A guitar design firm called Born to Rock has won an initial victory over the user-generated T-shirt-printing website CafePress in a legal battle over whether CafePress users will be allowed to use the company's name as part of their T-shirt designs. While the guitar firm initially registered the phrase only for use selling guitars, it has taken the position that any use of the phrase "born to rock" by a CafePress user infringes its trademarks.

CafePress is a popular website that allows users to create their own graphical designs and have them printed on T-shirts, mugs, and other items. It sells these items on users' behalf and splits the proceeds.

Born to Rock Design first sent CafePress a cease and desist letter in 2009, asking it to remove all items involving the phrase "born to rock." CafePress resisted the company's demands, arguing that the use of the mark was permitted under trademark law's fair use doctrine. But Born to Rock wasn't satisfied with this response. After filing a new trademark application formally claiming the phrase "Born to Rock" for use in selling T-Shirts in addition to guitars, it sued CafePress for trademark infringement.

Eric Goldman notes that earlier this month, the court issued a preliminary ruling rejecting CafePress' request to dismiss the lawsuit. CafePress made several arguments, the most important of which was that its users are using the phrase "born to rock" as an ordinary English phrase, not a reference to the guitar manufacturer's products. That, CafePress argued, meant that the use was excused by trademark law's fair use doctrine.

Looking at a sample of the images at the heart of the dispute gives some plausibility to this argument:

It seems pretty clear that, for example, a T-shirt with a picture of a rocking chair and the phrase "born to rock" is not a reference to Born to Rock guitars.

But Judge Colleen McMahon ruled that not all of the images were so clear-cut. Some do involve guitars, and she said it would be up to a jury to decide which images were references to the guitar trademark and which were merely ornamental uses of the phrase.

As Goldman notes, the ruling puts CafePress in a bit of a bind. It may eventually prevail in court, but not without racking up a lot of legal bills first. And the fact that its liability depends on the details of each design means the company is likely to face more lawsuits like this one—as indeed it has faced at least one such lawsuit in the past. That may force CafePress to become more trigger-happy about removing merchandise in the face of complaints by trademark requests, which could open the door to abusive takedown demands by trademark holders.

Yet CafePress' user-generated business model and the complexity of trademark law may make it impractical for the company to pre-screen design submissions. And even if it did begin vetting designs before accepting them, that might lead to higher liability down the road, since trademark owners could argue that CafePress bore greater responsibility for designs after having specifically vetting them.

This kind of catch-22 is why Congress established a "safe harbor" that shields online service providers from liability for copyright-infringing content submitted by users if they respond promptly to takedown notices. But there's no analogous safe harbor available in this kind of trademark case.

Timothy B. Lee
Timothy covers tech policy for Ars, with a particular focus on patent and copyright law, privacy, free speech, and open government. His writing has appeared in Slate, Reason, Wired, and the New York Times. Emailtimothy.lee@arstechnica.com//Twitter@binarybits

How odd is it that a company making instruments of creative expression is seeking to smother creative expression?

It's not really. Under US law the owner of a trademark is required to make use of it and to defend it in order to retain ownership. In other words, it's effectively a legal necessity for them to file suit in any situation like this.

The interesting story here is not the apparent (to those who lack the relevant knowledge) absurdity of a manufacturer suing an online service provider over the use of what is quite a common phrase. It's the implications for all such service providers if that manufacturer should prevail. Right now, the "safe harbor" provisions of the DMCA protect organizations like CafePress from the infringing actions of their users; if I were to start selling t-shirts through that site that said "Blackberry" on the front and had a picture of a smart phone on the back, I would be responsible for that when RIM came knocking, not CafePress. However, if this case concludes with a jury deciding that CafePress is liable for distinguishing "Born to Rock" used in a guitar context from "Born to Rock" in any other context, and removing from their site any instances of the former, that DMCA provision essentially becomes irrelevant. That would have far-reaching consequences for any website that contains user generated content. In all likelihood the liability bar would be raised so high that a lot of sites would be forced to shut down.

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shadowjin wrote:

These lawsuits are really getting out of hand. Ive heard that phrase since forever. Why should they be the ones to own it? its a phrase that's been around and used forever.

Prior use doesn't render a trademark invalid. (Perhaps you're thinking of patents?) There are all kinds of commonly used words or phrases that are also trademarks in certain contexts. For example:

This is insane. I didn't know that a business can own the english language.

Try selling a tshirt with "champion" or "puma" on it and see how well that works out for you, despite being common words (as an Australian I claim access to the first one, the second probably Apple has a trademark on in 200 countries and 8 different planets). This is copyright law, born to rock owns a trademark on selling shirts with "born to rock" on them.

Cafe press is trying to push the fair use thing, but they're making a lot of cash out of printing tshirts, it's going to be hard to uphold. And if anyone can put anything on a shirt, you're going to more knockoffs than a Chinese market showing up on the site soon enough.

This is greed on a much larger, more insidious and pervasive scale, though. And it is real greed - not the hate the wealthy for being wealthy accusations of greed. It is business models built around "regular" prices being absurdly high only to make it appear that a reduced price is a "sale". It is individuals buying into consumerism to such an extent that they can't even imagine not being without their cell phone, or their email. Children's lives and interests being overly focused on material objects or mindless entertainment that boarders on addiction. Educators that scoff at old books because the pages are yellow and the cover is not glossy and pristine. Grocery markets that look like covers of magazines with their unblemished produce piled up in pyramids and big box stores with their pallets of re-branded mass-market foods. And, of course, in the corporate world, corporations that make no distinction between theft and sharing - that want consumers to pay for every minute and instance of their consumption. And in the above case, using the law to stretch the arm of one's trademark into the absurd. The list goes on. The tidal wave of consumerism continues to grow so rapidly people are drowning themselves in working to consume, rather that working to live. How much of our time is spent in a circular bucket brigade passing money from one person?

I'm as caught up as the next person, but I acknowledge the problem and an increasing sense of uneasiness about it.

Wonder if I could put a stylized guitar on a tee-shirt and include the phrase "born to run?" Since Cupertino has proven that things like "a.pl" are close enough, maybe every phrase with "born to" in it is fair game for these folks. That said, I think they are acting despicably here and wouldn't do business with them even if I were born to do so.

The perils of over legalism - specially when there is no room, in legal stuff, about common sense, obviousness and intentions. If it is written, it must be adhered to. The very idea of trademarking a thing for exclusive ownership is wrong and this is a prime example of it.

Unfortunately, trademark law, and patent law as well, for that matter, have yet to catch up to the reality of user-generated content.

You nailed it. This is the only comment I've seen so far which talks about the actual issue here.

Folks, read the Eric Goldman post that was linked to in the article. The reason for alarm here is not the apparent invalidity of this particular trademark claim. Even if the claim were 100% valid, CafePress would still be in the same bind; its entire business model is at stake.

This is starting to get absurd.This goes along the lines of absurdity. Why can't some companies get the effort to combine things in new ways? My opinion on if a name should be trademarkableOK:MicrosoftGoogleFirefoxYoutubeFacebookWalmartNOT OK:WindowsMacintoshAppleOperaGolemChipStack OverflowBorn to RockThese are just some examples. Why is it that hard to not give out common trademarks? I've got absolutely no problem with using those names, but they shouldn't be able to belong to a trademark.

Unfortunately, trademark law, and patent law as well, for that matter, have yet to catch up to the reality of user-generated content.

You nailed it. This is the only comment I've seen so far which talks about the actual issue here.

Folks, read the Eric Goldman post that was linked to in the article. The reason for alarm here is not the apparent invalidity of this particular trademark claim. Even if the claim were 100% valid, CafePress would still be in the same bind; its entire business model is at stake.

I agree that this is the main issue at hand here. However, I do feel that there was a shift in the use of trademark in the last 10 years or so.

Trademark is supposed to exist to prevent a company from unduly profiting from another one’s image to further its profit or to gain undeserved respectability or visibility. In many of the trademark cases that I’ve seen reported in the last few years, it really isn’t clear how the plaintiff company is hurt. Legislative validity notwithstanding, these trials all seem like plots to extort money from other company rather than honest claim to protect a company’s image and visibility. In a normal country this would be a clear signal to legislator that some changes to existing law have to be voted upon. Alas in the US, the disastrous state of the USPTO seems to profit to way too many people.

Doesn't any such trademark on a common name or phrase require also that the font/style/design etc. of the logo be taken as part of the trademark.?

I.e. since this is just a common phrase and a set of three words from the english language, how can it be a trademark infringement if those same words are printed in anything other than the same font/style etc. as the trademark?

Isn't one of the tests for infringement "likelihood of confusion", not "category" of use? If so, if none of the individual-generated designs is likely to be confused with Born to Rock's company design (and the t-shirts they are offering are only logo design ones from what I saw on their website), wouldn't all those individuals using CafePress, and CafePress itself, be in the clear? Or am I interpreting that incorrectly?

This is insane. I didn't know that a business can own the english language.

It's worse than that, UPS claims to own the colour brown.

And John Deere their very own combination of green and yellow that no one else can use.

That no one else can use for marketing farm equipment, landscaping equipment, etc.

You are perfectly able to use that combination for your law firm logo (as just the first random example to spring to mind).

You are of course correct. I retract my statement. Little me, perpetuating myths.

Upon further research, even John Deere's competitors can paint their machines green. Apparently, green is a "functional" color in this industry but one might find trouble if they paint the body of the machine green and the wheels yellow. It isn't exactly clear, a quality that is increasingly common to these trademarks. If you were to take John Deere's legal statement at face value, you might conclude that they own the yellow and green color scheme outright.

Likewise, UPS doesn't own brown. UPS owns brown only in the context of delivery services. Their attempt to trademark the color brown was initially denied. Once they were able to prove that the color brown is distinctive of their brand ("What can Brown do for you?"), it was granted.

This is an interesting article detailing some of the provisions of trademark law and from which I am borrowing. I'm still not comfortable with these trademarks; it seems so very broad and open for interpretation. If UPS were to enter other industries, would they then be able to leverage their trademark color there, as well? Do broad aesthetic trademarks extend to fan paraphernalia, like t-shirts, regardless of a company's industry, as Born to Rock seems to believe? Would a brown t-shirt depicting a graphic of a parcel, visually distinct from UPS's trademark logo but nevertheless suggesting package delivery, run afoul of UPS's trademarks on the visual distinction of the color brown alone?

The above linked article stems from one particular discussion about red-soled shoes. Specifically, Louboutin's shoes with "China red" soles. What is "China red"? Presumably, Louboutin won't be satisfied if competitors can sneak in under the wire by using "Fire Engine red" instead. Would all shoes be so protected or only high heels? Another example from that article is Time Square's naked cowboy; the ensemble of white briefs, white boots, and white cowboy hat, apparently owned in all contexts, even when worn by an anthropomorphic talking candy.

Surely I'm not the only one uncomfortable with where this is headed, where business ventures will be impeded by a veritable field of hidden trademark landmines featuring properties like "shoes with red soles". A brave new world where cash-flush corporations with a corral of attorneys can fire off lawsuits and cease and desist letters and most people won't be able to defend themselves. I have no horse in this race but I reject it on principle.

Eventually we will realize the "lawyering" off every little aspect of our culture to private corporations who control our access to it for their profit is not in the best interest in the long-term viability of our societies.

Surely I'm not the only one uncomfortable with where this is headed, where business ventures will be impeded by a veritable field of hidden trademark landmines featuring properties like "shoes with red soles". A brave new world where cash-flush corporations with a corral of attorneys can fire off lawsuits and cease and desist letters and most people won't be able to defend themselves. I have no horse in this race but I reject it on principle.

Well we already know if you put the word "Scrolls" into a video game title Bethseda will go after you, possibly regardless of the rest of the title so we're already getting there. Honestly in a case like that I would have thought you'd need more context for Scrolls to be confusing much like how in this case I know "born to rock" perfectly well and I don't think it's a bad idea for a company name...but I didn't know a company named that actually existed and owned the entire concept on a shirt.

Just think of how much decent creativity gets to die because they exist that had nothing to do with them in the first place.

It's just you. The rest of us live in a world of sunshine, lollipops and rainbows everywhere.

Not to mention the magic puddings - unlimited chocolate for everyone!

Cadbury Chocolates will be ringing you up for your infringement of their unlimited chocolate world IP.

Former New Orleans mayor Ray Nagan will be next in line to defend his Chocolate City concept.

On a more related note - I always thought Bruce Springsteen's song went "Cuz tramps like us... baby we were born to rock" but apparently it's "born to run". either way i'm pretty sure there's PLENTY of songs out there whose lyrics actually are "born to rock" and they probably predate this guitar store's creation, and were probably the inspiration for said store's name in the first place. so who's stealing from whom?

Haven't we all (above a certain age) seen "Born to Rock" T-shirts long before this CafePress outfit ever existed? Maybe people should start posting photos of their twenty-year-old concert shirts as useful evidence.

I've seen Born to X for as long as I can remember; if nothing else, "Born to Kill" was widely displayed in promotional materials for Full Metal Jacket. Given the popularity of the movie, the meme was inevitable.

This shouldn't be trademarkable.

It goes back to the early "Born to lose" tattoos you saw on WWII vets.

"Born to Rock" can't hold the patent / trademark / copyright on a phrase that has been around since before the idiot owners were born after the term came around - the term has been in heavy use as prior art - he can't enforce this unless the judge is blind.

This is the same reason that the SciFi Channel changed their name to SyFy - too hard to control a generalized commonplace naming convention. IF - NBC/ Universal had trouble enough to change - this guy crying about his 1995 legal claims is delusional and has no chance. Even if he gets the prelim - it will fail on appeal.

The only case these dudes might have is going after another company using the term as a slogan or their name.

Apple Inc vs Apple Records.

I can take and "apple" and slap it on a T-Shirt as a graphic and neither of those companies (of which one has as their logo) can do jack shit about it. I can even sell those T-shirts as "apple" T-shirts - again - neither company can tough me.

As long as the logo is not blatently copied. Those T-shirt printers can print the phrase in any fashion they choose to. AND not a single one of the above images infringes on that dudes trademark or copyright.

(and FYI - this moron's logo is using a stock font and clipart -- both of which probably have their own copyright on them)

This is just one of those "jump on the lawsuit band-wagon" lawsuits where some low--life scraping by is trying to make a buck.

What happens when someone trade marks a widespread phrase, such as in this case? Surely if someone trademarked "have a nice day" they couldn't sue anyone using that phrase in a context of good will?

You are talking about "descriptive fair use", a feature of US trademark law, which says that ordinary words can be used freely, even if they are part of someone else's trademark. One of the arguments made by CafePress was that "born to rock" is one of those common phrases one can't lay claim to. The judge made a troubling ruling in this case, saying it's not necessarily descriptive fair use when that phrase is paired with images of a guitar; a jury has to make that call. If that ruling isn't appealed, or is upheld on appeal, it raises some thorny issues. This is covered in Eric Goldman's post (see link in the article).

Although the fact that a somewhat frivolous case like this can't be easily/cheaply resolved without a jury trial is surely irritating, CafePress's main problem, as I see it, has more to do with the fact that they can't force people to use their DMCA-like takedown system instead of suing them, because there's no safe-harbor provision in trademark law.